Possible grounds for trademark oppositions
An analysis of the CONFY v. COMFY case

The trademark registration process in Thailand allows any person to file an opposition against a trademark application during the 60-day publication period if they consider that they have superior rights to the trademark than the applicant, that the trademark is not registrable under Section 6 of the Trademark Act B.E. 2534 (1991), or that the application does not otherwise comply with the provisions of the Act.[1] This article will examine how an opposition can lead to the rejection of a trademark on other grounds than pure similarity.

Facts of the case

The Opponent, a Turkish entity, owns the trademark “CONFY” for hygiene and sanitation products, which has been registered in several countries, including Thailand, since 2019 (in classes 3, 5 and 16).
 
In 2023, the Applicant filed a trademark application for the mark “Comfy” in class 5 for goods (sanitary pads) identical or similar to those of the Opponent. The application was accepted by the Registrar and published.
 
The owner of the CONFY trademark subsequently filed an opposition against the application on the grounds that the applied-for mark was similar to their registered trademarks. The Registrar dismissed the opposition, finding that the two trademarks were not alike.
 
Decision of the Trademark Board
 
The Opponent appealed the Registrar’s decision before the Trademark Board, invoking both the grounds of similarity and non-distinctiveness. In particular, it was argued that the applied-for mark incorporated the word “Comfy” together with a sanitary pad device, which directly describes or refers to the characteristics and quality of the designated goods, namely sanitary pads. As such, the mark should be considered non-distinctive under the Trademark Act.
 
Upon consideration of the appeal, the Trademark Board exercised its discretion to examine the issue of non-distinctiveness and invited the Applicant to submit additional clarification in support of the registrability of the applied-for mark. However, the Applicant failed to submit any clarification within the prescribed period.
 
Accordingly, the Trademark Board issued a decision rejecting the trademark application.[2] While the Board maintained that the two trademarks were dissimilar in terms of appearance and pronunciation, it nevertheless concluded that the applied-for mark lacked distinctiveness. The Board reasoned that the word “Comfy” plays an essential role in the mark and directly refers to the quality of the goods. This conclusion was reached notwithstanding the fact that the word “Comfy” had been disclaimed in accordance with the Registrar’s order.
 
Conclusion
 
This case illustrates an important strategic consideration for trademark oppositions in Thailand: opponents should not rely solely on similarity arguments but should also consider invoking alternative grounds of non-registrability under Section 6 of the Trademark Act. As the CONFY v. COMFY case demonstrates, even where the Trademark Board finds that marks are dissimilar, it retains the discretion to examine other registrability issues, including inherent lack of distinctive character. A well-crafted opposition that raises multiple grounds, such as descriptiveness, lack of distinctiveness, or deceptiveness, may succeed even where a similarity-based challenge fails. This approach maximizes the likelihood of a favorable outcome and ensures that all potential vulnerabilities in an applicant’s mark are brought to the Board’s attention.

References:
[1] Section 35 of the Trademark Act B.E. 2534 (1991)
[2] Trademark Board decision no. 61/2568